Monthly Archive: September 2020

Banksy Decision Highlights the Importance of Trade Mark Usage and Filing in Good Faith

A recent decision around a trade mark application from the street-artist Banksy highlights the importance of usage and filing in good faith for trade mark applications.

 

What is a Trade Mark?

Trademarks act as a “badge of origin”, enabling consumers to identify the commercial source from which goods and services come from.  They distinguish the goods and services of one business from those of other businesses within the same industry.  This has the effect of minimising confusion and protecting the consumer from counterfeit or deceptive offerings from third parties.

 

Usage Requirement

It is a basic principle of trade marks that a connection exists between a trader and the goods and services they provide, and that there is no such connection if the mark is not used.  To remain valid, trade marks must therefore be used in the course of trade in relation to the goods and services specified in the scope of the right.

In New Zealand, a continuous period of non-use of three years or more may be accepted as grounds for revocation of a registered trade mark.

 

Good Faith Requirement

Trade mark registration can also be refused or invalidated if the application was made in bad faith.  In this context, bad faith relates to having unfair intentions when filing the application, and may include:

  • Using the trade mark for purposes other than the intended function of a trade mark to act as an indicator as to the origin of goods or services
  • The scope of protection having the effect of introducing unfair competition in the market
  • Prior knowledge of an identical or similar third-party mark, that your mark may be confused with

There has to be a genuine intention to use the trade mark appropriately at the time of making of the application.

 

Banksy Case and EUIPO Decision

“Flower Thrower” is one of Banksy’s most recognisable works.  Depicting a masked man in the act of throwing a bunch of flowers, it first appeared in 2003, and has been used and reproduced, as has much of his art, in a variety of settings.  In 2014, Banksy’s representatives made a successful application to trade mark the Flower Thrower in the European Union.

In 2019, a greeting’s card company, Full Colour Black, which often uses Banksy’s artworks on their products, started an invalidity action against the mark, on the grounds that the registered image had never been intended to be used as a trade mark in the first place.  Later that year, Banksy created an online gift shop and shop front, Gross Domestic Product, in an attempt to comply with EU trade mark law by showing use of the contested mark.

Earlier this month (September 2020), the European Union Intellectual Property Office (EUIPO) Cancellation Division ruled against Banksy and that the trade mark should be declared invalid.  They found that, at the time of filing his application, he had no intention to use the mark as a trade mark for the commercialisation of goods or services, and that his shop had only been set up in response to the invalidity action.

They also found that the trade mark application had been made to avoid using copyright laws to protect his works.  Enforcing a breach of copyright would require Banksy to reveal his true identity, whereas trade marks can be owned and enforced through a third-party representative.

Trade marks are an important, well defined, and valuable form of intellectual property, with clear differences from other types of IP right such as copyright, patents, designs, geographical indications etc.  A registered brand is a valuable business asset that indicates the origin and quality of the goods and services a business provides.

This decision highlights the importance for any business, big or small, to protect, manage and enforce their intellectual property appropriately.

Alistair Curson

 

References

Angelopoulou SL. (2020, September 18). “Banksy loses trademark legal battle with greeting-card company while his identity remains a mystery”. Retrieved September 22, 2020, from: https://www.designboom.com/art/banksy-loses-trademark-legal-battle-graffiti-greeting-cards-company-09-18-2020/

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Bakare L. (2020, September 17). “Banksy trademark ‘at risk’ after street artist loses legal battle”. Retrieved September 22, 2020, from: https://www.theguardian.com/artanddesign/2020/sep/17/banksy-trademark-risk-street-artist-loses-legal-battle-flower-thrower-graffiti

BBC. (2020, September 17). “Banksy loses battle with greetings card firm over ‘flower bomber’ trademark”. Retrieved September 22, 2020, from: https://www.bbc.com/news/entertainment-arts-54189113

Bonadio E. (2019, October 12). “Banksy’s trademark battle exposes a huge hypocrisy in his anti-copyright views”. Retrieved September 22, 2020, from: https://qz.com/quartzy/1726408/banksys-trademark-dispute-with-full-colour-black-could-backfire/

Curson AD. (2020, January 14). “Changes to the New Zealand Trade Marks Act”. Retrieved September 21, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=266

Curson AD. (2020, June 30). “Fluid Trademarks”. Retrieved September 21, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=317

European Union Intellectual Property Office. EUTM File Information 012575155. Retrieved September 23, 2020, from: https://euipo.europa.eu/eSearch/#details/trademarks/012575155

Lince T. (2020, September 14). “Gross Domestic Failure – Banksy trademark portfolio “at risk” after registration ruled invalid”. Retrieved September 21, 2020, from: https://www.worldtrademarkreview.com/brand-management/gross-domestic-failure-banksy-trademark-portfolio-risk-after-eu-registration-declared-invalid

MyArtBroker. “Banksy Portfolio: Love Is In The Air (Flower Thrower)”. Retrieved September 23, 2020, from: https://www.myartbroker.com/artist/banksy/love-is-in-the-air-flower-thrower/

New Zealand Copyright Act 1994, s22. Retrieved September 23, 2020, from: http://www.legislation.govt.nz/act/public/1994/0143/latest/DLM345932.html

New Zealand Trade Marks Act 2002, s17. Retrieved September 21, 2020, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164459.html

New Zealand Trade Marks Act 2002, s66. Retrieved September 21, 2020, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164640.html

Official Journal of the European Union. (2006, December 27). “Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights”. Retrieved September 23, 2020, from: https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:32006L0116

Sullivan B, Butler D. (2019, October 14). ” ‘Trade mark dispute’ 2019 Banksy”. Retrieved September 22, 2020, from: https://www.ajpark.com/insights/ip-updates/trade-mark-dispute-2019-banksy/

van de Mortel L. (2020, January 13). “Need to know: ‘Bad faith’ in trademark law”. Retrieved September 21, 2020, from: https://www.novagraaf.com/en/insights/need-know-bad-faith-trademark-law

Wikipedia. (2020, September 18). “Banksy”. Retrieved September 21, 2020, from: https://en.wikipedia.org/wiki/Banksy

Geographical Indications in Australia – Public Consultation on the Creation of a New IP Right

On 4th September 2020, the Australian Government opened public consultations on the creation of a new geographical indications right.  This relates to the ongoing negotiations between Australia and the European Union (EU) for a Free Trade Agreement, where the protection of geographical indications is one of the key objectives of the EU’s negotiating position.

 

What is a Geographical Indication?

A geographical indication is a sign that informs the consumer that a product with specific characteristics comes from a particular geographical location.  For example, sparkling wine can only be called Champagne if it comes from the Champagne region in France.

It also assures that the product has been made in accordance with the specific recipes and processes necessary to give it the expected attributes.

Where the consumer attributes certain characteristics, including quality and reputation, to be associated with products originating from a specific place, this form of IP right provides assurance that the product does indeed originate from there.

 

Difference Between a Trade Mark and a Geographical Indication

There is some overlap between trade marks and geographical indications as both provide an assurance to the consumer as to the origin of a product.  However, the two are subtly different.

A trade mark provides a “badge-of-origin” as to the commercial source of a product or service, i.e. the company or other entity that is providing it.

A geographical indication, on the other hand, distinguishes the product itself and its actual global location of origin.

 

How are Geographical Indications Currently Protected in Australia?

Australia currently has two systems for the protection of geographical indications.

All goods can have a geographical indication registered as a type of trade mark called a Certification Trade Mark (CTM).  This is a trade mark (a sign for distinguishing goods and services) that has been certified by the owner of the mark that the goods or services meet certain standards “…in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture…”.  As such, both registered trade mark requirements and certification requirements have to be met, as well as competition and fair-trade rules.

There is also a separate system for the registration of geographical indications for wines.

 

Purpose of the Public Consultation

Should an acceptable Free Trade Agreement with the EU be negotiated, it is likely that Australia will have to make provision for the protection of certain EU geographical indications, which is currently not possible within the existing Australian systems.

One option being considered is an amendment to the Trade Marks Act 1995 to create a new, clearly defined, Geographical Indications right, which would protect both Australian and international geographical indications.

Were this to go ahead, then the current Certification Trade Mark and wine geographical indication systems could either remain as they are in parallel, or a new single geographical indications system could be introduced.

Whilst any changes would, in part, be driven by the outcomes of the negotiations with the EU, they would need to be developed and implemented to best meet the needs of Australian businesses, industries and consumers.

The consultation, which closes on 30th November 2020, aims to gather relevant views with respect to any potential changes to the geographical indication system in Australia.

Alistair Curson

 

References

Australian Trade Marks Act 1995, s169. Retrieved September 08, 2020, from: https://www.legislation.gov.au/Details/C2019C00085

Curson AD. (2019, September 03). “Geographical Indications – Implications of a New Zealand / EU Trade Deal on Product Names”. Retrieved September 07, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=240

European Union: Your Europe. (2020, May 12). “Geographical indications”. Retrieved September 07, 2020, from: https://europa.eu/youreurope/business/running-business/intellectual-property/geographical-indications/index_en.htm

IP Australia. (2019, February 26). “Geographical indications”. Retrieved September 08, 2020, from: https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/types-trade-marks/certification-trade-mark/geographical

IP Australia. (2020, September 04). “Australia-European Union Free Trade Agreement: Consultation on a Possible New Geographical Indications Right”. Retrieved September 08, 2020, from: https://consultation.ipaustralia.gov.au/policy/geographical-indications/

IP Australia. (2020, September 04). “The Australia – EU Free Trade Agreement – Consultation on a possible new geographical indications right”. Retrieved September 08, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/australia-eu-free-trade-agreement-consultation-possible-new

New Zealand Intellectual Property Office. “Geographical Indications”. Retrieved September 07, 2020, from: https://www.iponz.govt.nz/about-ip/geographical-indications/

Wikipedia. (2020, June 29). “Free trade agreement”. Retrieved September 07, 2020, from: https://en.wikipedia.org/wiki/Free_trade_agreement

Wine Australia Act 2013, Part VIB. Retrieved September 08, 2020, from: https://www.legislation.gov.au/Details/C2017C00368

World Intellectual Property Organisation. “Geographical Indications”. Retrieved September 07, 2020, from: https://www.wipo.int/geo_indications/en/